General Information on protecting your invention outside of the United States

 

As a reminder, the rights granted by an issued United States patent being exclusionary against others who make, use , sell, offer to sell, or import your claimed invention without your permission only apply throughout the territory of the United States and have no effect in a foreign country, noting that if there are unique contacts concerning the make, use, sell, offer to sell, and import aspects of your invention within the territory of the United States, then your United States patent may have coverage for infringement.  However, if the aforementioned make, use, sell, offer to sell, and import activities related to your invention happen entirely outside of the territory of the United States, your United States patent will not have any infringement coverage. 

 

Thus, an inventor who desires patent protection in a country foreign to the United States must apply for a patent in the specific countries that the inventor desires a patent in.  As there are some regional foreign patent application procedures such as the Patent Cooperation Treaty also known as the PCT, or the European Patent Office also known as the EPO can facilitate international patent application and prosecution (processing) activities only.  However, keep in mind that the issue or grant of the individual foreign country patent only occurs in the particular foreign country, or by foreign country by foreign country basis for multiple foreign patents, noting that the PCT or the EPO international patent application process does not result in the issue or grant of an individual foreign country patent, as the PCT and EPO are application procedure processes only.  Most foreign countries have their own specific patent law, and an inventor who wants a patent in a particular foreign country must make an application for patent in that particular foreign country in accordance with the particular laws of that foreign country.  Keeping in mind that the patent laws of many foreign countries differ in some respects to the patent law if the United States, it is highly desirable that a foreign local patent agent or foreign local patent attorney be utilized for a particular foreign country for the purpose of seeking guidance and following proper procedures to help ensure that your foreign patent rights are maintained. 

 

A word of caution is that if the inventor makes the invention within the United States a foreign filing license must be obtained from the United States patent office before the foreign patent application is made, note that if you file a patent application in the United States for a new utility patent application the foreign filing license review is automatically done and is normally required to be granted or not granted to you within six months of the United States patent application filed date.  However, even if you decide not to file a United States patent application a foreign filing license is still required from the United States Patent Office, there is a procedure available for this situation, and you will only request a foreign patent application filing license from the United States patent office without filing United States patent application should you desire to file a patent application first either in the PCT, or EPO, or a specific individual foreign country prior to, or never filing for a United States patent.

 

Use the following checklist as a starting point for preserving your international IP legal rights

 

What you need to do (See the “Inventor Issues” section of this website for detail on what you need to do, as this section is a continuation of the end of the “Inventor Issues” section)

 

Your commercial plans determine how best to structure your international intellectual property plans, as there are a number of ways to secure foreign patent and trademark protection.  Your international commercialization plans concerning such items as; which countries, how many countries in total, and your timing requirements for protection all come into play for determining which method is best for obtaining international intellectual property protection.  

 

Examples would be direct national filings in individual foreign countries, regional filings such as the European Patent Office (EPO), or worldwide filings such as the Patent Cooperation Treaty (PCT), or a combination of these.  For more information on the details of the various routes to take for international patent protection please see the “How much does a patent cost?” portion of the Frequently Asked Questions (FAQ) page of this website.  See also the question “How much does a federal trademark registration cost?” for international cost information on trademarks.   

 

What you cannot do
Do not disclose your invention to anyone anywhere without a strong confidentiality agreement.

Do not test market your invention prior to filing your patent application.

Do not launch a new product until you have checked for your products possible infringement of existing patents. 

 

International patents adhere to an ABSOLUTE NOVELTY standard, which means that NO disclosure is allowed prior to filing the patent application.  Compare this to a United States patent where you have a one-year grace period after you publicly disclose your invention to file your patent application. 

 
Typical Stages of an international patent application:

Definitions:
Publication A;           Patent application is disclosed to the public domain.

Publication B;           Fully prosecuted patent is disclosed to the public domain, also known as the “Grant” of the patent. 

Opposition;    A 3rd party can challenge the patents entire or partial validity. 

 

First filing
Submitting of a written application to the relevant patent office.

Invention must be “Absolutely Novel”, meaning no prior disclosures of any kind.  Applicable prior art is worldwide and can be anything: a patent, a publication, a speech, a physical object, or anything that discloses the invention to the public domain.     

 

Invention must contain an “Inventive Step” and cannot be an obvious progression based upon the state of the art.

 

First filing plus 12 months  
This is the deadline for filing in another country other than the first filing country or the Patent Cooperation Treaty (PCT) route to maintain the initial first filing priority date.  This alternative filing decision depends upon the commercialization strategy of the invention.  

 

First filing plus 18 months
Application is published, called the “A Publication”, at this point the patent office search is usually completed and prosecution starts. 

 

First filing plus up to approximately 42 months is patent grant 
Prosecution can be for up to approximately 2 years after publication, after conclusion of prosecution patent is granted or called the “B Publication”.

 

Grant point in time plus up to 9 months after the grant is the opposition period

A 3rd party can challenge the patent during the opposition period, at which time the patent office will make a decision on the opposition.  An unfavorable decision can be appealed, with the appeal decision usually being final as to the disposition of the opposition. 

 

Grant confirmation is approximately 24 months after the end of the opposition period. If the patent applicant has a favorable appeal after an opposition has been made a “Grant Confirmation” is made of the patent.